James T. Kirby

Trademark Trial and Appeal Board

Sep 22, 2008

No. 77006212 (T.T.A.B. Sep. 22, 2008)

Mailed:
22 September 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re James T. Kirby
________

Serial No. 77006212
_______

Clegg Ivey, Esq. for James T. Kirby.

Michael Engel, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 25, 2006, applicant James T. Kirby filed
an application to register on the Principal Register the
mark COCAINE and design shown below:

For “carbonated and non-carbonated soft drinks and energy
drinks” in class 32. The date of first use anywhere is
THIS OPINION
IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 77006212
2
listed as March 3, 2006, and the date of first use in
commerce is listed as June 30, 2006. Serial No. 77006212.
The examining attorney has refused to register the
mark on the ground that the mark is “immoral or scandalous
within the meaning of Trademark Act Section 2(a).” 15
U.S.C. 1052(a). Brief at 1. The examining attorney argues
that “Cocaine is an illegal drug, with harsh penalties for
its possession or use. Its use as a product name for
energy drinks has been widely condemned.” Brief at
unnumbered p. 2. When the examining attorney made the
refusal final,1 applicant filed this appeal.
Evidence
The examining attorney has submitted three internet
articles that all refer to an energy drink called
“Cocaine.” Highlights from the articles2 are set out below:
I. www.cbsnews.com (May 7, 2007)

“Cocaine” Pulled from Shelves Nationwide
An energy drink called Cocaine has been pulled from
stores nationwide amid concerns about its name, the
company that produces it said Monday.

Clegg Ivey, a partner in Redux Beverages LLC of Las
Vegas, said the company plans to sell the drink under
a new name for now.

1 In his Final Office Action, the examining attorney withdrew
refusal under Section 2(e)(1) of the Trademark on the grounds
that the mark was descriptive or deceptively misdescriptive.
2 Applicant admits that at least the first two articles refer “to
Applicant’s marketing campaign.” Brief at unnumbered p. 2.
Ser No. 77006212
3
The Food and Drug Administration issued a warning
letter this month that said Redux was illegally
marketing the drink as a street drug alternative and a
dietary supplement. May 4 was the deadline for the
company to respond.

The FDA cited as evidence the drink’s labeling and Web
site, which included the statements “Speed in A Can,”
“Liquid Cocaine” and “Cocaine – Instant Rush.” The
company says Cocaine contains no drugs and is marketed
as an energy drink. It has been sold since August in
at least a dozen states…

Ivey said the FDA did not order the company to stop
marketing the drink, but officials were concerned
about possible legal action. They will announce a new
name within a week and hope to have the product back
on store shelves within a few weeks.

“What we would like to do is continue to keep the name
because it's clearly the name that’s the problem,”
Ivey said, “what we can’t do is distribute our product
when regulators in the states and the FDA are saying
that if you do this, you could go to jail.”

Attorneys general in Connecticut and Illinois recently
announced that Redux had agreed to stop marketing
Cocaine in those states, while a judge in Texas has
halted distribution there.

“Our goal is to literally flush Cocaine down the drain
across the nation,” said Connecticut Attorney General
Richard Blumenthal, who announced the company’s
agreement with his state Monday. “Our main complaint
about Cocaine is its name and marketing strategy
seeking to glorify illegal drug use and exploit the
allure of marketing “Speed in a Can,” as it called the
product.”

II. www.nytimes.com (October 2, 2006)
Politicians Say Soft Drink Glamorizes Drugs
Outraged New York City lawmakers denounced today the
manufacturer of a new, highly caffeinated soft drink
called Cocaine and called for a boycott of the
beverage, saying it glamorized an illegal and deadly
narcotic that has ravaged urban neighborhoods since
the epidemic of the 1980’s.
Ser No. 77006212
4

“There are only two reasons that you would seek to use
this infamous and insidious name to market your so-
called energy drink,” said Councilman James Sanders,
Jr. of Queens, who organized a news conference at City
Hall. “Either you are woefully ignorant of the
horrors of cocaine addiction, or your god is the
dollar bill and not even human life is more sacred.”

The beverage has attracted considerable publicity,
most of it negative, since its introduction in
Southern California. The company’s web site lists
five retailers that sell the beverage – all of them in
or around New York City. It is also available in Los
Angeles and San Diego.

While the Web site states that “we don’t advocate drug
use,” it suggests that the carbonated beverage should
be mixed with alcohol – offering recipes for cocktails
with names like Liquid Cocaine, Cocaine Smash, Cocaine
Blast and Cocaine Snort. The site touts the
beverage’s page on MySpace, a heavily trafficked
social-networking site that is popular among children
and teenagers.

Experts in drug use and nutrition condemned the
beverage.

Joseph A. Califano Jr., chairman and president of the
National Center on Addiction and Substance Abuse at
Columbia University, used five adjectives – insidious,
disgraceful, irresponsible, reprehensible and
disgusting – to describe the soft drink.

In a statement, Mr. Califano, who was secretary of
health, education and welfare in the Carter
administration, said it was “clearly aimed at children
and teen ‘partygoers.’”

III. www.energyfiend.com
Cocaine Energy Drink Banned in Australia
The energy drink called cocaine will not be going on
sale in Australia who are refusing to import it.
Apart from the most unfortunate name of the drink,
Australia has restrictions on caffeine levels in
drinks – currently 145 mg. per liter (33.8 fl. oz.)

Ser No. 77006212
5
In the US, Cocaine is getting its fair share of
controversy with many stores refusing t[o] stock it.
There have been protests in some communities with
protestors claiming the drink glorifies drug abuse.3

Applicant has submitted no evidence to support its
position that the mark is not immoral or scandalous.
However, applicant does argue that “the US Patent and
Trademark Office has allowed registration of (or published
for opposition) a variety of drug-related marks for use in
conjunction with energy drinks, including EXTAZY, BLACK
OPIUM, METH, BONG WATER, DIESEL, JUICE and KRONIK. All of
these marks are named after illicit drugs or, in the case
of BONG WATER, illicit paraphernalia.” Response dated
September 25, 2006 at 3.
We point out that the “Board does not take judicial
notice of third-party registrations, and the mere listing
of them is insufficient to make them of record.” In re
Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998).
However, if “the applicant, during the prosecution of the
application, provided a listing of third-party
registrations, without also submitting actual copies of the
registrations, and the examining attorney did not object or
otherwise advise applicant that a listing is insufficient

3 This article is relevant because of its discussion of the goods
and the reaction to the mark COCAINE on beverages in the United
States.
Ser No. 77006212
6
to make such registrations of record at a point when the
applicant could cure the insufficiency, the examining
attorney will be deemed to have waived any objection as to
improper form.” TBMP § 1207.03 (2d ed. rev. 2004). In
this case, the examining attorney has not advised applicant
that simply listing the marks was not enough to make them
of record. While we therefore can consider these
references, the limited information here is entitled to
little weight. TBMP § 1208.02 (“The Board will not
consider more than the information provided by applicant.
Thus, if applicant has provided only a list of registration
numbers and marks, the list will have very limited
probative value”).
We add that the reference to a list of terms that may
or may not be registered is not very persuasive. Most of
the terms or their phonetic equivalent to which applicant
refers have more than one meaning such as EXTAZY, DIESEL,
JUICE and KRONIK. If a term has more than one meaning, it
may indicate that the term is not scandalous. In re
Boulevard Entertainment Inc., 334 F.3d 1336, 67 USPQ2d
1475, 1478 (Fed. Cir. 2003). Also, to the extent that
applicant has admitted that some of these marks are for
pending applications, we point out that “such material is
incompetent as proof of anything other than the fact that
Ser No. 77006212
7
such an application for registration was filed in the
Patent Office.” Zappia-Paradiso, S.A. v. Cojeva Inc., 144
USPQ 101, 102 n.4 (TTAB 1964). See also Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981)
(“Introduction of the record of a pending application is
competent to prove only the filing thereof”) and In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1050 n.4 (TTAB
2002) (“While applicant also submitted a copy of a third-
party application … such has no probative value other than
as evidence that the application was filed”). This is true
also for a mark that may be immoral and scandalous and
subject to opposition in the Office on that basis. Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999)
and Bromberg v. Carmel Self Service, Inc., 198 USPQ 176
(TTAB 1978).
We add that even if applicant did make copies of the
registration of other marks properly of record, it would
not dictate the result in this case. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics
similar to Nett Designs' application, the PTO's allowance
of such prior registrations does not bind the Board or this
court”). Accord Jaquet-Girard S.A. v. Girard Perregaux &
Cie., S.A., 423 F.2d 1395, 165 USPQ 265, 266 (CCPA 1970)
Ser No. 77006212
8
(“Appellant relies primarily on four prior rulings in this
court on other marks but, as we have often said, prior
decisions on different marks used under different
circumstances are of little value”). Therefore, even to
the extent that we can consider applicant’s references to
other terms, we find that it is entitled to little weight.
Applicant also refers to subsequent dealings with the
FDA in his brief. The examining attorney has not had an
opportunity to respond to these arguments with evidence.
However, these references are simply argument of counsel
and they are a poor substitute for evidence. The CCPA has
noted in a case regarding arguments of counsel, a party
“had ample opportunity to submit rebuttal evidence but
failed to do so, placing his faith in the arguments of
counsel, which are not evidence.” Peeler v. Miller, 535
F.2d 647, 190 USPQ 117, 121 (CCPA 1976). See also Enzo
Biochem Inc. v. Gen Probe Inc., 424 F.3d 1276, 76 USPQ2d
1616, 1622 (Fed. Cir. 2005) (“Attorney argument is no
substitute for evidence”). Similarly, counsel’s arguments
in his appeal brief are not evidence and we will not rely
on them.
Applicant also refers to several lists that are
apparently available at Wikipedia.org concerning drug
references in songs and movies. This evidence is obviously
Ser No. 77006212
9
untimely and we will not consider it. 37 CFR § 2.142(d).
In re Trans Continental Records Inc., 62 USPQ2d 1541, 1541
n.2 (TTAB 2002) (Exhibits from web search engines not
considered when submitted for the first time on appeal).
We also point out that a “mere reference to a website does
not make the information of record.” In re Planalytics
Inc., 70 USPQ2d 1453, 1457 (TTAB 2004).
With these evidentiary clarifications, we now address
the merits of the appeal.
Section 2(a) Refusal
Applicant seeks to register the mark COCAINE and
design for carbonated and non-carbonated soft drinks and
energy drinks. Cocaine is defined as: “A bitter,
crystalline alkaloid, obtained from coca leaves, used as a
local anesthetic and also widely used as an illegal drug
for its stimulant and euphorigenic properties” (chemical
formula omitted).4 Cocaine is a controlled Schedule II
substance:
2) Schedule II.--
(A) The drug or other substance has a high potential
for abuse.
(B) The drug or other substance has a currently
accepted medical use in treatment in the United States

4 The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). We take judicial notice of this and
the other definitions included in this opinion. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 77006212
10
or a currently accepted medical use with severe
restrictions.
(C) Abuse of the drug or other substances may lead to
severe psychological or physical dependence.

21 U.S.C. § 812.

The question here is whether the use of the term
COCAINE on soft drinks and energy drinks is scandalous. In
order to demonstrate that a mark is scandalous, the Federal
Circuit has set out that:
the PTO must demonstrate that the mark is “shocking to
the sense of truth, decency, or propriety;
disgraceful; offensive; disreputable; ... giving
offense to the conscience or moral feelings; ... [or]
calling out [for] condemnation.” In re Riverbank
Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (CCPA
1938) (citations omitted). The PTO must consider the
mark in the context of the marketplace as applied to
only the goods described in [the] application for
registration. In re McGinley, 660 F.2d 481, 485, 211
USPQ 668, 673 (CCPA 1981). Furthermore, whether the
mark…, including innuendo, comprises scandalous matter
is to be ascertained (1) from “the standpoint of not
necessarily a majority, but a substantial composite of
the general public,” id., 211 USPQ at 673, and (2) “in
the context of contemporary attitudes,” In re Old
Glory Condom Corp., 26 USPQ2d 1216, 1219 (TTAB 1993).

In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d
1923, 1925 (Fed. Cir. 1994). See also Boulevard
Entertainment, 67 USPQ2d at 1477 (“To justify refusing to
register a trademark under the first clause of section
1052(a), the PTO must show that the mark consists of or
comprises ‘immoral, deceptive, or scandalous matter.’ A
showing that a mark is vulgar is sufficient to establish
Ser No. 77006212
11
that it ‘consists of or comprises immoral … or scandalous
matter’ within the meaning of section 1052(a)”) (citation
omitted).
As Mavety requires, we must look at the mark in the
context of the goods. In this case, the goods are
relatively inexpensive soft drinks and energy drinks.
There are two features of applicant’s goods that are
particularly relevant. First, the potential purchasers of
these goods would encompass virtually all consumers,
including adults, teenagers, and children old enough to
make their own purchasing decisions. Applicant’s marketing
practices include a website that “touts the beverage’s page
on MySpace, a heavily trafficked social networking site
that is popular among children and teenagers.”
www.nytimes.com. Second, the goods are beverages, which
are eatable or consumable. The word “Cocaine” is not
objectionable because it is vulgar, as were the offensive
words that have been refused registration in Boulevard
Entertainment and In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB
2006), inasmuch as it is a term that would be commonly used
to refer to the drug. However, when used in combination
with soft drinks and energy drinks, the term does not have
a neutral meaning, as it might when used in a news story or
medical reference. Applicant’s identification of goods
Ser No. 77006212
12
includes soft drinks and energy drinks that are highly
caffeinated. Indeed, applicant’s goods are described that
way. See www.nytimes.com. Caffeine is defined as “a
white, crystalline bitter alkaloid usually derived from
coffee or tea: used in medicine chiefly as a nervous
system stimulant.” (chemical formula omitted).5 While we
are aware that cocaine and caffeine are significantly
different both legally and chemically, nonetheless they
both are a type of stimulant.
The evidence shows that applicant’s website “suggests
that the carbonated beverage should be mixed with alcohol –
offering recipes for cocktails with names like Liquid
Cocaine, Cocaine Smash, Cocaine Blast and Cocaine Snort.”
www.nytimes.com. Applicant has promoted his product as
“Speed6 in A Can,” “Liquid Cocaine” and “Cocaine – Instant
Rush.” Because the product is an inexpensive “highly
caffeinated soft drink” that can be purchased by teens and
children and is advertised in a manner so as to suggest an
illegal drug-like effect, it has a scandalous meaning when
used in association with these goods.

5 The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987).
6 “Speed” is slang for “methamphetamine.” Webster’s II New
Riverside University Dictionary (1984).
Ser No. 77006212
13
The board arrived at the opposite conclusion when it
considered the mark ACAPULCO GOLD for suntan lotion. In
that case the board held:
While the notation “ACAPULCO GOLD” may be a synonym
for marijuana, the question as to whether or not a
term is scandalous or immoral within the meaning of
Section 2(a) of the Statute must necessarily be
considered in relationship to the goods in connection
with which it is used. The goods in this case [are]
suntan lotion, and, in our opinion, to the average
purchaser of suntan lotion in the normal marketing
milieu for such goods, the term “ACAPULCO GOLD” would
suggest the resort city of Acapulco noted for its
sunshine and other climatic attributes rather than
marijuana. Under such circumstances, “ACAPULCO GOLD”
does not fall within the prohibition of Section 2(a).

In re Hepperle, 175 USPQ 512, 512 (TTAB 1972).
There are two significant differences between these
cases. First, the term “cocaine” has no other meaning
besides the name of the drug. Second, the Hepperle goods,
suntan lotion, were not associated with the use of
marijuana. Applicant’s highly caffeinated soft drinks are
marketed as “Liquid Cocaine” and “Speed in a Can” and
applicant promotes its use with alcohol in drinks called
Cocaine Smash, Cocaine Blast and Cocaine Snort. As the
evidence indicates, it is not surprising that a product
that can be bought by adults, teens, and children, that
associates itself with a drug that is illegally used, and
that is promoted to be combined with alcohol has met with
controversy. The association of applicant’s product with a
Ser No. 77006212
14
drug that is widely abused is significant. Both
applicant’s product and COCAINE are stimulants. By
suggesting through the use of the mark COCAINE that its
product can, to some degree, approximate the stimulant
effect of the drug, applicant’s mark is used in a way that
supports the conclusion that the term COCAINE comprises
scandalous matter as ascertained from a substantial
composite of the general public in the context of
contemporary attitudes. We add that we have also
considered the fact that applicant has sought registration
of the term COCAINE in white letters in a red square.
However, this additional design feature does not change the
impact of the word COCAINE when used on the identified
goods.
We also have taken into consideration applicant’s
statement that applicant has “revamp[ed] its advertising
campaign.” Brief at unnumbered pp. 3-4. As we indicated
earlier, we have no evidence on this point. We also point
out that applicant admits that he “used terms like ‘speed
in a can’ and ‘liquid speed.’” Brief at 3. Furthermore,
regardless of the current state of applicant’s advertising,
we have no evidence to conclude that applicant is
prohibited from resuming marketing strategies that
associate his goods with illegal drug use. Accord Russell
Ser No. 77006212
15
Chemical Co. v. Wyandotte Chemicals Corp., 337 F.2d 660,
143 USPQ 252, 253 (CCPA 1964) (“Since the marketing
environment is subject to change at any time it should not
form the basis for any conclusive inference with respect to
the issue of likelihood of confusion”) and Meyer Chemical
Co. v. Anahist Co., 263 F.2d 344, 120 USPQ 483, 484 (CCPA
1959):
The nature of goods specified in the application is
not limited by specimen labels. Such labels are
subject to change without notice to the Patent Office.
Either a change in the composition of the product or
in prescription standards could, moreover, free
“Almehist” for over the counter sales while its
description would still be a “Preparation for Relief
of Allergic Conditions in Capsule Form.” We hold that
under these circumstances the present differences in
marketing methods do not form a proper basis for
finding lack of likelihood of confusion or mistake
when the respective trademarks are used on the goods
enumerated.

Applicant has also argued that the “examining attorney
failed to consider the mark in the context of the
marketplace for energy drinks.” Brief at 4. Applicant’s
argument is undercut by his own failure to submit any
evidence on the marketplace other than his counsel’s
statement. Furthermore, the evidence of the examining
attorney supports the conclusion that the marketplace for
energy drinks is not as tolerant of clearly drug-related
terms as applicant suggests.
Ser No. 77006212
16
Applicant also faults the examining attorney for
“failing to demonstrate that a substantial composite of the
general public would find the mark scandalous.” We point
out that for certain highly offensive terms, a dictionary
definition only may be sufficient to demonstrate that a
substantial composite of the public would find the mark
scandalous. Boulevard Entertainment, 67 USPQ2d at 1478
(“In this case, we answer the question left open in Mavety
by holding that, in a case in which the evidence shows that
the mark has only one pertinent meaning, dictionary
evidence alone can be sufficient to satisfy the PTO's
burden”). “Cocaine” is not such a term that a simple
definition is enough to establish that it is scandalous to
a substantial composite of the general public. But in this
case, we have evidence that the FDA, Connecticut and
Illinois Attorneys General, and New York City Council
members all protested the use of the mark COCAINE with soft
drinks. A former Secretary of Health, Education and
Welfare described the use of the mark on applicant’s goods
as: “insidious, disgraceful, irresponsible, reprehensible
and disgusting.” Another site refers to: “protests in
some communities.” We note that this evidence is not
general speculation but evidence that applicant’s mark as
used on his goods has generated the controversy that a
Ser No. 77006212
17
scandalous mark would. We conclude that the evidence
supports the examining attorney’s conclusion that
applicant’s mark is scandalous to a substantial composite
of the general public in the context of contemporary
attitudes.
We also address applicant’s argument that there has
been “a major shift in social attitudes, with a clear trend
toward acceptance of drug references as apart of mainstream
culture.” Brief at 7. We point out again that applicant
has submitted no admissible evidence to support this
argument. The examining attorney’s evidence suggests that,
even if there was some evidence to support his argument,
this alleged “shift in social attitudes” is not as great as
applicant asserts. Finally, we add that we are looking at
applicant’s mark in the context of applicant’s goods, which
include highly caffeinated energy drinks. The potential
purchasers of these goods include teens and children.
There is no suggestion in applicant’s argument that there
has been a societal shift in its values away from
protecting children and teens from the promotion of illegal
drugs. We also cannot accept applicant’s suggestion that
his use is “tongue-in-check” (Brief at 8). Again, coming
back to applicant’s goods and advertising, he is selling a
highly caffeinated beverage (a stimulant) that he has
Ser No. 77006212
18
promoted its use in combination with alcohol. Applicant
has chosen to describe the goods by such terms as “Speed in
A Can.” The public is unlikely to recognize this as
tongue-in-check use.
Inasmuch as we have no doubts that applicant’s mark
COCAINE and design for the identified goods is scandalous,
we affirm the examining attorney’s refusal.
DECISION: The examining attorney’s refusal under
Section 2(a) of the Trademark Act is affirmed.